Article 83

Transitional regime

1.   During a transitional period of seven years after the date of entry into force of this Agreement, an action for infringement or for revocation of a European patent or an action for infringement or for declaration of invalidity of a supplementary protection certificate issued for a product protected by a European patent may still be brought before national courts or other competent national authorities.

2.   An action pending before a national court at the end of the transitional period shall not be affected by the expiry of this period.

3.   Unless an action has already been brought before the Court, a proprietor of or an applicant for a European patent granted or applied for prior to the end of the transitional period under paragraph 1 and, where applicable, paragraph 5, as well as a holder of a supplementary protection certificate issued for a product protected by a European patent, shall have the possibility to opt out from the exclusive competence of the Court. To this end they shall notify their opt-out to the Registry by the latest one month before expiry of the transitional period. The opt-out shall take effect upon its entry into the register.

4.   Unless an action has already been brought before a national court, proprietors of or applicants for European patents or holders of supplementary protection certificates issued for a product protected by a European patent who made use of the opt-out in accordance with paragraph 3 shall be entitled to withdraw their opt-out at any moment. In this event they shall notify the Registry accordingly. The withdrawal of the opt-out shall take effect upon its entry into the register.

5.   Five years after the entry into force of this Agreement, the Administrative Committee shall carry out a broad consultation with the users of the patent system and a survey on the number of European patents and supplementary protection certificates issued for products protected by European patents with respect to which actions for infringement or for revocation or declaration of invalidity are still brought before the national courts pursuant to paragraph 1, the reasons for this and the implications thereof. On the basis of this consultation and an opinion of the Court, the Administrative Committee may decide to prolong the transitional period by up to seven years.

Case Law

Court of Appeal

IPPT20240604, UPC CoA, Neo Wireless v Toyota
Opt out must be by all proprietors of all national parts of a European patent (Article 83(3) UPCA).  The object and purpose of Art. 83(3) UPCA make clear that the opt out Application must be lodged by or on behalf of all proprietors of all national parts if there are more validations. The legislator has expressly chosen that, as a default position, there is an automatic transition into the jurisdiction of the UPC and that the status quo prior to the establishment of the UPC is not maintained. The interpretation, whereby all proprietors of all national parts must file the opt out Application, is in accordance with the default position chosen by the legislator. If not all proprietors of all national parts of an European patent file the opt out Application, the ‘default position’ stays in place.

Court of First Instance

IPPT20240508, UPC CFI, LD Munich, Volkswagen et al. v NST
Valid withdrawal of opt-out on behalf of NST by a representative included in the official list of patent attorneys kept by the Registrar pursuant to Art. 48.3 UPCA who was not required to justify with powers of attorney at the time of filing the application on behalf of NST (Rule 5.3(b)(i) RoP, Article 83.3 UPCA). 

IPPT20240502, UPC CFI, CD Paris, Nokia v Mala Technologies
Preliminary objection against jurisdiction of the UPC because of ‘lis pendens’ with German revocation action rejected (Rule 19.1(a) RoP, Article 71c Brussels I, Article 83 UPCA). Lis pendens rules of Article 71c(2) Brussels I Reg recast do not apply  to a case in which the lawsuit before the national German court was brought two years before the beginning of the transitional period. 

IPPT20231020, UPC CFI, LD Helsinki, AIM Sport Vision v Supponor

UPC lacks competence because withdrawal of opt-out on 5 July 2023 is ineffective due to national infringement and invalidity proceedings brought before German national courts, which were pending on 1 June 2023 (Article 32 UPCA, Article 83 UPCA, Rule 5 RoP). Irrelevant whether same parties are involved in the national actions. Article 71c(2) Brussels I Regulation (recast) only concerns a situation of parallel jurisdiction and is not applicable where the competence of the UPC has been opted out. The reading used by the Court of Article 83(4) UPCA is also in line with the principle of non-retroactivity of treaties as stipulated under Article 28 VCLT.

IPPT20230913, UPC CFI, LD Vienna, CUP&CINO v Alpina Coffee
Application to opt-out (6 July 2023) is ineffective after commencement of the action before the Court (27 June 2023) (Rule 5(6) RoP). The blocking mechanism means that the jurisdiction of the UPC can no longer be withdrawn. Request for interim measures is an “action” within the meaning of Rule 5 and 5A RoP and Article 83(3) UPCA.